E7-12400. In the Matter of Certain Male Prophylactic Devices

Order

This investigation was instituted on August 5, 2005, based on a complaint filed on behalf of Portfolio Technologies, Inc., of Chicago, Illinois. 70 FR 45422. The complaint, as amended and supplemented, alleged violations of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain male prophylactic devices by reason of infringement of claims 1-27, 31-33, and 36 of U.S. Patent No. 5,082,004. The respondents named in the investigation are Church & Dwight Co., Inc., of Princeton, New Jersey (“C&D”); Reddy Medtech, Ltd., of Tamil Nadu, India; and Intellx, Inc., of Petoskey, Michigan.

On June 30, 2006, the presiding administrative law judge (“ALJ”) issued a final initial determination (“ID”) in which he ruled that there is no violation of section 337 of the Tariff Act of 1930, as amended. He found that certain valid claims were infringed, but concluded that there was no domestic industry under the economic prong of the domestic industry requirement. All parties petitioned for review of various parts of the final ID.

On September 29, 2006, the Commission determined to review the issues of claim construction, infringement, invalidity due to anticipation, and domestic industry, and requested briefing on these issues and certain subissues. 71 FR 58875 (Oct. 5, 2006). On December 5, 2006, the Commission determined to affirm in part, reverse in part, and remand in part the final ID. Among other things, the Commission reversed the ALJ's finding of no domestic industry under the economic prong. The Commission also determined to extend the target date for completion of the investigation until June 5, 2007. The date was subsequently moved to June 21, 2007, by an unreviewed ID.

On March 19, 2007, the ALJ issued his remand ID (“IDR”), in which he ruled that there is a violation of section 337 based on the infringement of certain valid claims and the finding that there is a domestic industry. In further briefing before the Commission, all parties claimed error.

Having examined the parties' submissions and the record in this proceeding, it is hereby ordered that —

(1) The ALJ's finding of violation of section 337 is reversed;

(2) The ALJ's finding that the accused products infringe certain claims of U.S. Patent No. 5,082,004 is reversed;

(3) The ALJ's finding that the Twisted Pleasure product fails to meet the thickness limitation of claims 22 and 25 of the asserted patent is reversed;

(4) The ALJ's finding that C&D waived its argument that claim 31 of the asserted patent is invalid as anticipated by the prior art is reversed;

(5) The ALJ's finding that claims 1, 6, and 9 of the asserted patent are invalid in view of the prior art are reversed;

(6) The IDR is vacated except where consistent with the determination of the Commission;

(7) The motion of the Office of Unfair Import Investigations to file its reply out of time is granted;

(8) The investigation is terminated with a finding of no violation of section 337;

(9) The Secretary shall serve a copy of this Order and the Commission Opinion in support thereof, as soon as it is issued, upon each party to the investigation; and

(10) The Secretary shall publish notice of this order and termination of the investigation in the Federal Register.

Issued: June 21, 2007.

By order of the Commission.

William R. Bishop,

Acting Secretary to the Commission.